Ex Parte Seethaler et al

Patent Trial and Appeal Board

Mar 29, 2017

12539348 (P.T.A.B. Mar. 29, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/539,348 08/11/2009 Kenneth S. Seethaler RPS920090028USNP(710.120) 9132
58127 7590 03/29/2017
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
WILLIAMS, ARUN C
ART UNIT PAPER NUMBER
2859
MAIL DATE DELIVERY MODE
03/29/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENNETH S. SEETHALER, JEREMY R. CARLSON,
LARRY G. ESTES, HIROMITSU YAMAGUCHI,
SHIGEFUMI ODAOHHARA, TAKESHI MATSUMOTO
____________

Appeal 2014–006891
Application 12/539,348
Technology Center 2500
____________

Before TERRY J. OWENS, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

BEVERLY A. FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1, 2, 9–12, and 18–25. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
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Application 12/539,348

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1. An apparatus comprising:
one or more processors;
a multi-modal battery pack having one or more battery
cells therein; and
a program storage device housed within said multi-modal
battery pack, the program storage device tangibly embodying a
program of instructions that when executed by the one or more
processors enables the multi-modal battery pack to:
automatically determine an appropriate charging mode;
and
switch the one or more battery cells therein between
charging modes, the charging modes comprising:
a lifespan mode wherein the one or more battery cells are
fractionally charged;
a runtime mode wherein the one or more battery cells are
charged; and
a quick charge mode wherein the one or more battery
cells are charged in a compressed time period;
said apparatus further comprising one or more battery
powered components operatively connected to the multi-modal
battery pack.

THE REJECTIONS

1. Claims 1, 2, 9–12, and 18–24 are rejected under 35 U.S.C. § 103(a)
over Odaohhara (US 6,910,143 B2; iss. Jun.21, 2005) in view of Mahowald
(US 2009/0289603 Al; pub. Nov. 26, 2009), and further in view of Suzuki
(US 5,874,823; iss. Feb. 23, 1999).
2. Claim 25 is rejected under 35 U.S.C. § 103(a) over Odaohhara in
view of Mahowald, and further in view of Suzuki, and further in view of
Field (US 2004/0155661 Al; pub. Aug. 12, 2004).
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ANALYSIS

Appellants dispute that the combined references suggest switching the
one or more battery cells therein between charging modes, the charging
modes being a lifespan mode, a runtime mode, and a quick charge mode
as required by claim 1, for reasons provided on pages 11–13 of the Appeal
Brief and on pages 11–15 of the Reply Brief. Therein, Applicants argue that
none of the references suggest using the three claimed charging modes in
combination, or switching there-between. Also, Appellants argue that the
rejection confuses the claimed modes with various teachings of the
references, and does not adequately explain how the charging schemes in the
references allegedly map to Applicants’ claims, how they might be
combined, or why it would be obvious to do so.
The Examiner finds that Odaohhara is silent regarding:
“the program storage device tangibly embodying a program of
instructions that when executed by one or more processors enables the
multi-modal battery pack to; automatically determine an appropriate
charging mode; and switch the one or more battery cells therein
between charging modes, the charging modes comprising a lifespan
mode wherein the one or more battery cells are fractionally charged,
and a run time mode wherein the one or more battery cells are
maximally charged.”

Final Act. 3–4.

The Examiner relies upon Mahowald for teaching using a program
storage device embodying programmed instructions for automatically
switching between two charging modes, and the Examiner refers to each
mode as a lifespan (partial charge) mode and a run time (full charge) mode.
Final Act. 4. The Examiner finds that Odaohhara, taken in combination with
Mahowald, or Mahowald further lacks an explicit disclosure of “a charging
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mode corresponding to a quick charge mode wherein the one or more battery
cells are charged in a compressed time period.” Final Act. 4–5; see Final
Act. 6–7. The Examiner relies upon Suzuki for teaching a mode that the
Examiner believes is a quick charge mode as claimed. Final Act. 5, 7.
We agree with Appellants that the Examiner has not established that
any of the references, or their combination, suggest switching among the
three modes as claimed (App. Br. 10–13; Claims 1, 11, 20). Suzuki teaches
the idea of using trickle charging following a quick charging of the battery
pack. Suzuki, col. 11, l. 64– col. 12, l. 42. Suzuki states that “[q]uick
charging (trickle charging executed when both batteries are in an over-
discharged state) can be executed in the conventional manner, i.e., by using
a relatively large current from a commercially available power source
outside the electronic apparatus”. Suzuki, col. 7, l. 66–col. 8, l. 3.
Appellants argue that the Examiner has not established that this is a quick
charge mode relative to the modes taught in Mahowald. We agree. The
Examiner has established that this is a quick charge mode within the context
of the disclosure of Suzuki, but does not point to evidence showing how this
mode relates to the modes as defined in Mahowald. Mahowald defines a
“partially charge state” as a “partial charge mode” meaning that the battery
is “charged up to a threshold”. Mahowald, p. 2, para. [0019]. Mahowald
defines a “full charge state” as a “full charge mode” meaning that a “full
charge” is provided to the battery pack. Mahowald, p. 2, para. [0020]. The
Examiner does not explain how these modes relate to the quick charge mode
as defined in Suzuki (discussed, supra). This undermines motivation to add
the quick charge mode of Suzuki to the system of Odaohhara in view of
Mahowald when it is not articulated how the modes would then relate to
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each other. This is the point raised by Appellants, and the point that the
Examiner does not adequately address in the record.
Furthermore, the Examiner’s motivation to combine is “for
advantages such as providing the ability to control flow of current”.
Final Act. 5. Appellants submit that this reasoning is insufficient
because the ability to control flow of current is already provided in
Odaohhara or Mahowald. Appeal Br. 13. Reply Br. 14–15. In other
words, on this record, the Examiner’s proposed modification appears
to be premised on an impermissible use of hindsight after review of
Appellants’ disclosure rather than on a supported reason to so modify
available to an ordinarily skilled artisan and consistent with the
teachings thereof. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007) (The fact finder must be aware “of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning”; citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)
(warning against a “temptation to read into the prior art the teachings
of the invention in issue”)).
In view of the above, we reverse Rejection 1. We also reverse
Rejection 2 because the Examiner relies on Field for allegedly suggesting
features of dependent claim 25, not for curing the aforementioned
deficiencies of the combination of Odaohhara in view of Mahowald and
Suzuki. Final Act. 9.

DECISION
Each rejection is reversed.

REVERSED